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Edward Chatterton

Socio
Co-Head of IPT, Asia
Ed is extremely commercial and has a no-nonsense approach. He understands a number of issues very quickly, manages to cut through a lot of complexity and go straight to the points, giving advice quicker than I thought. 
— Chambers Greater China region, 2022
Hong Kong
About

Edward Chatterton specializes in intellectual property work, with a particular emphasis on providing brand protection and enforcement advice in Hong Kong and the PRC.  

He advises on the full range of intellectual property matters, including the ownership, maintenance, protection and exploitation of intellectual property, clearance work and dispute resolution, both in resolving disputes pre-action and in formal litigation. 

His experience includes providing advice on the full range of IP including the protection and commercialization of IP, clearance work and advice and dispute resolution. He has significant experience in IP enforcement and IP licensing and valuation. 

He has been involved in handling a wide range of matters before the courts and intellectual property offices in Hong Kong, China, the UK and Europe. Edward has also managed complex multi-national litigation and enforcement work, particularly in the Asia-Pacific region.

Edward advises clients across a diverse range of industries including FMCG companies, fashion and luxury goods brands, financial institutions, and technology companies, as well as organisations in the manufacturing and construction industries. 

 
Areas of FocusPropiedad IntelectualBienes de consumo, alimentos y comercio minoristaServicios financieros FranquiciaServicios industrialesInfraestructura, construcción y transporteMedios, deportes y entretenimiento TecnologíaESGDatos, privacidad y ciberseguridadTrademark and Copyright LitigationTrademark and Copyright Counseling Strategy Enforcement and ProsecutionAdvertising Marketing and Promotions
Professional QualificationsSolicitor of the High Court of Hong KongSolicitor of the Senior Courts of England and Wales

EXPERIENCE

  • Advising a leading international tech company on a range of copyright infringement matters, in relation to the launch of the company’s new online services in Asia.
  • Advising Enjin on global trademark protection of its core brands, including devising and implementing a brand protection strategy for its portfolio of brands in multiple countries around the world, particularly in Hong Kong, China, Singapore, South Korea, Japan, Australia, the US and the EU.
  • Advising a cloud-based software company on a strategic partnership in China, including negotiation of a complex brand and trademark license across multiple territories.
  • Advising HSBC on a full range of trademark and brand protection matters, including trademark filing, prosecution and portfolio management globally.
  • Advising on Manolo Blahnik's trademark portfolio in Asia, including reviewing its existing trademark portfolio and providing filing strategy, regular monitoring of third-party hijacks, and enforcement actions against hijackers and infringers.
  • Managing McDonald’s trademark portfolio dealing with new filings, renewals, assignments, oppositions, invalidations and enforcement across Asia.
  • Advising a leading US-based global fast casual restaurant chain as the exclusive counsel on the full range of intellectual property and brand protection matters for its expansion into Asia, including undertaking a full ‘audit’ of their trademark portfolio in China and advising on strategy for optimal protection of the company’s brands.
Languages
  • Inglés
Education
  • University of Bristol, Diploma in Intellectual Property Law & Practice, 2001
  • Nottingham Law School, LPC (Commendation), 1997
  • University of Leeds, LL.B (Hons), 1996

Awards

  • Recognized by Managing IP as an IP Star by Managing IP from 2020 - 2023
  • Ranked Gold for prosecution and strategy by World Trademark Review (WTR) 1000 for Hong Kong in 2022
  • Recognized as a Recommended lawyer for transactions, enforcement, and Litigation in WTR 1000 for Hong Kong in 2022
  • Edward is ranked in Chambers Global and Chambers Greater China Region as one of the world’s leading IP lawyers.
  • Recognized as a “Recommended” individual on Intellectual Property matters on the 2021 Doyle’s Guide (Hong Kong).
  • Ranked as a leading individual in Hong Kong by the World Trade Mark Review (WTR) which states that he is "intelligent and proactive" and "receives glowing praise from his many brand-oriented clients" (WTR 2014) and notes that he is "particularly praised for his dispute resolution nous" (WTR 2013)
  • Acknowledged as a leading practitioner in the 2011/12 edition of Legal 500 which described him as "knowledgeable and reliable"
  • IFLR 2013 described Edward and his team as "very competent" in trademark-related work

Publications

  • In focus: Edward Chatterton on Manolo Blahnik's TM win (worldipreview.com)
  • Inside Manolo Blahnik’s 22-year trademark battle | DLA Piper
  • Manolo Blahnik的22年商标争夺战, 2022 年 9 月 15 日
  • Defending trademarks from non-use cancellations: Strategies for OEM manufacturers in China, September 2021
  • Defending trademarks from non-use cancellations: Strategies for OEM manufacturers in China, 6 August 2021
  • What is worth copying is worth protecting: Brand protection through copyright, 14 May 2021
  • One size may not fit all: International registrations in China, 14 May 2021
  • Lost in translation: Chinese versions of Western brands, 14 May 2021
  • When West Goes East: Chinese trademark classification, 14 May 2021
  • PROTECT™ - Overview, 14 May 2021
  • China: Highest Court upholds punitive damages of up to five times the illegal gains in ip infringement claims, 30 April 2021
  • Law à la Mode, 20 November 2020

My latest insights

Event

Navigating Asia’s Evolving IP Landscape

9 de diciembre de 2024 .3 minute read

News

IP Stars recognizes 33 from DLA Piper's global IP practice in annual rankings

18 de junio de 2024 .3 minute read

Event

Top 10 FAQs about Intellectual Property – A Practical Guide for In-house Counsel

13 de junio de 2024 .3 minute read

View All

Connect

Phone

+852 2103 0504
(Work, Hong Kong)
+852 9196 2065
(Work)
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